Ex Parte Chen et alDownload PDFPatent Trials and Appeals BoardMay 28, 201913336682 - (D) (P.T.A.B. May. 28, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/336,682 12/23/2011 15150 7590 05/30/2019 Shumaker & Sieffert, P.A. 1625 Radio Drive, Suite 100 Woodbury, MN 55125 FIRST NAMED INVENTOR Peisong Chen UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 1010-739US01/l 10743 9103 EXAMINER HALLENBECK-HUBER, JEREMIAH CHARLES ART UNIT PAPER NUMBER 2489 NOTIFICATION DATE DELIVERY MODE 05/30/2019 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): pairdocketing@ssiplaw.com ocpat_uspto@qualcomm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PEISONG CHEN, YUNFEI ZHENG, RAJAN LAXMAN JOSHI, MUHAMMED ZEYD COBAN, and MARTA KARCZEWICZ Appeal2018-007305 Application 13/336,682 Technology Center 2400 Before ALLEN R. MacDONALD, MICHAEL M. BARRY, and DAVID J. CUTITTA II, Administrative Patent Judges. BARRY, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-3, 5, 6, 8-15, 21-30, and 79-83. See Final Act. l; App. Br. 29--41 (Claims App'x). Appellants have cancelled claims 4, 7, 16-20, and 31-78. Response after Final 2-10 (Sept. 27, 2017). We have jurisdiction under 35 U.S.C. § 6(b). We reverse and designate a new ground of rejection. 1 Appellants identify QUALCOMM Inc. as the real party in interest. App. Br. 3. Appeal2018-007305 Application 13/336,682 Introduction Appellants describe the invention as relating "to techniques for generating and scanning transform coefficients generated by a video coding process." Spec ,r 3. Claims 1, 8, 14, 21, and 27-30 are independent, and each includes limitations directed to "scanning modes." See App. Br. 29--41 (Claims App'x). The Specification explains that "[t]he scanning mode may define a predefined scan, such as a horizontal, vertical, diagonal or zig-zag scan, as opposed to an adaptive scan that modifies a scan order over time based on statistics calculated for scanned coefficients." Spec. ,r 54. Claim 1, shown here with key disputed limitations emphasized, is illustrative: Claim 1: A method of encoding video data, the method compnsmg: determining a prediction block of the video data; determining a transform block of the prediction block with a transform block size different than a size of the determined prediction block; determining, with a video encoder, a subset of transform and scanning mode combinations based on an intra-prediction mode and the transform block size, the subset of transform and scanning mode combinations comprising only scanning modes having predefined scanning orders; selecting, with the video encoder, a transform and a scanning mode from the subset of transform and scanning mode combinations for the determined transform block, the selected scanning mode having one of the predefined scanning orders; applying, with the video encoder, the selected transform to residual data associated with predicting the prediction block based on the intra-prediction mode so as to generate a two- dimensional array of transform coefficients; and 2 Appeal2018-007305 Application 13/336,682 applying, with the video encoder, the selected scanning mode to the transform block containing at least part of the two- dimensional array of transform coefficients to generate a one- dimensional array of transform coefficients according to the predefined scanning order of the selected scanning mode. App. Br. 29 (Claims App'x). Rejections and References The Examiner rejected claims 1-3, 5, 6, 8-15, 21-30, and 79-83 2 under 35 U.S.C. pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 3-5. The Examiner rejected claims 1-3, 5, 6, 8-10, 12-15, 21-23, 25-30, and 79-83 under pre-AIA 35 U.S.C. § I03(a) as unpatentable over Ye et al. (US 2008/0310512 Al; Dec. 18, 2008) and Suzuki et al. (US 2005/0271288 Al; Dec. 8, 2005) and, in the alternative, over Choi et al. (US 2009/0226103 Al; Sept. 10, 2009). Final Act. 5-19; see esp. id. at 5-8 (rejecting claim I). The Examiner rejected claims 11 and 24 under§ I03(a) as unpatentable over Ye, Suzuki, and Choi. Final Act. 19. ANALYSIS Written Description (or, rather, Indefiniteness) The Written Description Rejection and Appellants' Contentions The Examiner determined Appellants' as-filed "[S]pecification does not provide written description support for the exclusory 'only' limitation added to the independent claims," i.e., that "the subset of transform and scanning mode combinations compris[ es] only scanning modes having predefined scanning orders," as recited in claim 1. Final Act. 4. 2 We agree with Appellants' Appeal Brief footnote 100. 3 Appeal2018-007305 Application 13/336,682 Id. Par. 54 of the applicant's specification indicates that the scanning mode may define a predefined scan as opposed to an adaptive scan. However, this statement only indicates that the scanning mode includes predictive modes, it does not indicate that adaptive modes are excluded. While the examiner notes the "as opposed" term, this is used merely to distinguish the meaning of "predefined" scan orders and is not used to exclude adaptive scan orders from the transform and scan order subset. Appellants contend the Examiner errs because paragraph 54 of the Specification "makes clear that ' [ t ]he scanning mode may define !!. predefined scan, such as a horizontal, vertical, diagonal or zig-zag scan, as opposed to an adaptive scan that modifies a scan order over time based on statistics calculated for scanned coefficients."' App. Br. 14. "[T]he 'opposed to' language in this sentence not only makes a distinction between pre-defined and adaptive scans, but also 'defines' the term 'scanning mode.' The example of paragraph [0054] is clear that a scanning mode is defined as a predefined scan, not that the scanning mode merely includes predefined scans." App. Br. 15. "In addition, in view of the description in paragraphs [0047]-[0048] of Appellant's specification, a person of ordinary skill in the art of video coding would readily understand that the scanning mode recited in Appellant's claims are only predefined scans." Id. (further explaining that, consistent with the Specification, "an adaptive scan would not serve a purpose if the transform and scanning mode combinations were changed for every different block having been coded with a different intra prediction mode"). The Examiner responds by maintaining that paragraph 54 of the Specification "does not indicate that adaptive scanning modes are not to be used by the invention" and that it "merely establish[ es] two categories of 4 Appeal2018-007305 Application 13/336,682 scanning modes, these categories being predefined and adaptive." Ans. 19 ( specifically finding paragraph 54' s indication the scanning mode "may" define a predefined scan suggests that it also may not define a predefined scan). Our Analysis (Written Description and Indefiniteness) Certainly, Appellants' Specification demonstrates possession of an embodiment that includes a predefined scan selected from a group "such as horizontal, vertical, diagonal or zig-zag," which is a group of predefined scans, "as opposed to an adaptive scan." Spec. ,r 54. But this does not enable us to resolve the written description dispute. "[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite." Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). Here, the "comprising only" language of the disputed limitation may be interpreted in two different but reasonable ways. There is logical and textual support for both possible interpretations. Interpreting "comprising only" consistent with Appellants' arguments essentially reads it as "consisting of." We note this would be an unusual use of the notoriously well known "comprising" term of art. See, e.g., MPEP § 2111.03 ("Transitional Phrases"). Interpreting "comprising only" consistent with the Examiner's findings and reasoning would read the recited transform and scanning mode combinations subset as "comprising [(a)] only scanning modes having predefined scanning orders" and (b) possibly other items not inconsistent with (a). 5 Appeal2018-007305 Application 13/336,682 It is well settled that, during examination, the PTO must interpret terms in a claim using "the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant's specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). However, "[a]bsent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition." In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Thus, "while it is true that claims are to be interpreted in light of the specification and with a view to ascertaining the invention, it does not follow that limitations from the specification may be read into the claims." Sjolund v. Musland, 847 F.2d 1573, 1581 (Fed. Cir. 1988). As the court explained in In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989), the rationale for this approach to claim interpretation is that "during patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed." Here, as discussed above, the disputed limitation with the "comprising only" language, as recited in claim 1, is reasonably susceptible to two reasonable and different interpretations. We discern no definitive guidance from Appellants' Specification to resolve this indefiniteness problem. For this reason, pursuant to our authority under 37 C.F.R. § 4I.50(b), as discussed in more detail below, we enter a new ground of rejection for claim 1 under 35 U.S.C. § 112, second paragraph, for indefiniteness. This new ground of rejection under§ 112, second paragraph also applies for 6 Appeal2018-007305 Application 13/336,682 independent claims 8, 14, 21, and 27-30, each of which recites limitations corresponding to claim 1 's "comprising only" limitation, as well as to the dependent claims 2, 3, 5, 6, 9-13, 15, 22-26, and 79-83. Accordingly, because the scope of the claimed invention is unclear, it would be inappropriately speculative (a) to consider whether Appellants were "in possession of' the invention as claimed under 35 U.S.C. § 112, first paragraph, and (b) to consider whether the cited prior art teaches or suggests the claimed invention. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (determining a rejection cannot be sustained if the artisan of ordinary skill would have to make speculative assumptions concerning the meaning of claim language). In view of the foregoing, we proforma reverse the Examiner's rejections of claims 1-3, 5, 6, 8-19, 21-30, and 79-83 under 35 U.S.C. §§ 112, first paragraph, and 103(a). The New Ground of Rejection The essence of the requirement under 35 U.S.C. § 112, second paragraph is that the language of the claims must make it clear what subject matter the claims encompass - i.e., "'whether those skilled in the art would understand what is claimed when the claim is read in light of the specification."' Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1380 (Fed. Cir. 2011) (quoting Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). As discussed supra, because of the aforementioned "comprising only" claim language, claim 1 is subject to multiple plausible interpretations, and is therefore indefinite. Ex parte Miyazaki, 89 USPQ2d at 1211 ("[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is 7 Appeal2018-007305 Application 13/336,682 justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite."). Accordingly, pursuant to our authority under 37 C.F.R. § 4I.50(b), we enter a new ground of rejection under 35 U.S.C. § 112, second paragraph, of independent claims 1, 8, 14, 21, and 27-30 and their dependent claims 2, 3, 5, 6, 9-13, 15, 22-26, and 79-83, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. DECISION We proforma reverse the Examiner's 35 U.S.C. §§ 112, first paragraph and 103(a) rejections of claims 1-3, 5, 6, 8-19, 21-30, and 79-83. Pursuant to our authority under 37 C.F.R. § 4I.50(b), we enter a new ground of rejection for claims 1-3, 5, 6, 8-19, 21-30, and 79-83 under 35 U.S.C. § 112, second paragraph. Section 41. 5 O(b) provides that " [a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review" and that an appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the newly rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. ... (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record .... No time 8 Appeal2018-007305 Application 13/336,682 period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). REVERSED 37 C.F.R. § 4I.50(b) 9 Copy with citationCopy as parenthetical citation